In Re Suong-Hyu Hyon
679 F.3d 1363
| Fed. Cir. | 2012Background
- Reissue Application No. 10/643,674 arising from U.S. Patent No. 6,168,626 concerns UHMWPE molded articles for artificial joints.
- Examiner rejected all reissue claims as obvious over Zachariades (5,030,402) in view of Kitamaru (3,886,056) and as recapture under 35 U.S.C. § 251.
- Board affirmed the examiner on both grounds; the case on appeal challenges only the obviousness rejection, not the recapture issue.
- Representative reissue claim 40 covers crosslinking UHMWPE block, heating to compression-deformable temp, applying pressure, then cooling; claim 84 adds post-processing to form a component.
- Zachariades discloses UHMWPE with 3–6 million MW, compression and cooling with post-processing (including radiation cross-linking); cross-linking after molding is taught.
- Kitamaru discloses crosslinking before deformation, heating to molten state under pressure, and cooling, with claimed benefits from pre-compression crosslinking.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Was there a motivation to combine Zachariades and Kitamaru? | Hyon contends no motivation to combine different product embodiments. | Board and examiner found same UHMWPE class and benefits from pre-compression crosslinking justify combining. | Yes; substantial evidence supports motivation to combine. |
| Does the combination render the reissue claims obvious? | Hyon argues no single path to the claimed pre-crosslinking before deformation. | Combination yields enhanced properties (higher melting point, transparency, stability) per Kitamaru; predictable use of prior art element. | Yes; reissue claims would have been obvious. |
Key Cases Cited
- In re Constr. Equip. Co., 665 F.3d 1254 (Fed.Cir. 2011) (substantial evidence standard for motivation to combine)
- In re Wesslau, 353 F.2d 241 (Cal. Pat. App. 1965) (avoid cherry-picking from a reference; full context required)
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (Supreme Court 2007) (teaches reason to combine and reasonable expectation of success)
- Life Technologies, Inc. v. Clontech Laboratories, Inc., 224 F.3d 1320 (Fed.Cir. 2000) (reasonableness of expectation of success evaluated from the art)
- In re Gartside, 203 F.3d 1305 (Fed.Cir. 2000) (avoid hindsight and blueprint reasoning in obviousness)
- In re Lee, 277 F.3d 1338 (Fed.Cir. 2002) (thorough and searching factual inquiry required for combination)
- In re Dow Chem. Co., 837 F.2d 469 (Fed.Cir. 1988) (prior art state of the art governs assessment of obviousness)